Discussion

1. While the United States requires that claims define inventions that are novel and nonobvious over the prior art, most other countries of the world require that they be novel and define an "inventive step." Research how these standards differ.

2. Under the provisions of the PCT, applications filed in the U.S. receiving office may be searched by either the U.S. Patent Office or by the European Patent Office acting as an international searching authority. What considerations do you think might apply in selecting one searching authority over another? Do you think the relevant considerations are different for nanotechnology applications than for applications in other technology areas?

3. Imagine you are the chief technology officer of a start-up nanotechnology company. There are six technical scientists and engineers who generate a total of about forty inventions a year. Assume every invention is patentable. For the purposes of this exercise, each U.S. provisional application (see Discussion topic 5 under the section "Riding the Patent Office Pony") has a cost of $2500, each U.S. non-provisional application has a cost of $10,000, each PCT application has a cost of $5000, and each national phase application has a cost of $5000 (irrespective of country). An award of $1000 is given to the inventors for each disclosure used as a basis for a patent application. Your patent budget is $250,000. Your board of directors wants broad, effective patent coverage over as much of the world as possible. What patent filing strategy do you use? How many U.S. applications do you file? Do you file them as provisional or nonprovisional applications? How many PCT applications? How many national phase applications? Have a partner challenge your strategy from the perspective of an inventor whose invention is rejected, from the perspective of the board of directors, and from the perspective of your chief executive officer. Are you able to defend your strategy effectively?

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